TacoLand Holdings, LLC dba TacoLand

Trademark Trial and Appeal Board

Sep 21, 2018

No. 86935545 (T.T.A.B. Sep. 21, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 21, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re TacoLand Holdings, LLC dba TacoLand
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Serial No. 86935545
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Charles M. Hosch of Strasburger & Price LLP,
for TacoLand Holdings, LLC dba TacoLand

Philip Liu, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____
Before Wellington, Greenbaum and Coggins,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
TacoLand Holdings, LLC dba TacoLand (“Applicant”) seeks registration on the
Principal Register of the mark TACOLAND in standard characters for
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“entertainment, namely, live music concerts” in International Class 41 and “bar and
cocktail lounge services” in International Class 43.1
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the following
registered mark, TACO TIERRA and design (a caricature of a man wearing a
sombrero), displayed as

for “restaurant services” in International Class 43.2
After the Examining Attorney made the refusal final,3 Applicant filed a request
for reconsideration and appealed. The Examining Attorney denied the
reconsideration request, and the appeal proceeded. The appeal has been briefed.
For the reasons set forth below, we affirm the refusal to register in each class.

1 Application Serial No. 86935545 was filed under Section 1(a) of the Trademark Act, 15
U.S.C. § 1051(a), based upon Applicant’s claim of first use anywhere and use in commerce
since at least as early as February 19, 2014, as to both classes of services.
2 Registration No. 3039496 issued January 10, 2006; renewed. The registration contains the
following statement: “The English translation of the word ‘TERRA’ [sic] in the mark is
‘LAND’.”
3 The Examining Attorney also originally cited an additional registration (Reg. No. 1418759
TACOLAND MEAL) as a basis for the likelihood of confusion refusal. However, that
registration has since been cancelled and, as both Applicant and the Examining Attorney
have noted in their briefs, any possible refusal based on that now-cancelled registration is
moot.
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I. Likelihood of Confusion
The determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the relatedness of the goods or services. See In re Chatam Int’l Inc.,
380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods [or services] and differences in the marks.”).
A. Similarity of the Marks
We compare the marks “in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
(quoting du Pont, 177 USPQ at 567). The test assesses not whether the marks can be
distinguished in a side-by-side comparison, but rather whether their overall
commercial impressions are so similar that confusion as to the source of the goods
and services offered under the respective marks is likely to result. Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012);
see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012).
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In terms of connotation, it is not in dispute that the Spanish word “tierra” means
“land.”4 Thus, the entire wording in the registered mark, TACO TIERRA, is Spanish
for “taco land,” which is essentially the same as Applicant’s mark. Under the doctrine
of foreign equivalents, foreign words from common, modern languages are translated
into English to determine similarity of connotation with English words for purposes
of making our likelihood of confusion analysis. Palm Bay Imps. Inc., 73 USPQ2d at
1696; In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008). The doctrine is
not an absolute rule, but a guideline that should be applied only “when it is likely
that the ordinary American purchaser would stop and translate the foreign word into
its English equivalent. . . . The ‘ordinary American purchaser’ includes ‘all American
purchasers, including those proficient in a non-English language who would
ordinarily be expected to translate words into English.”’ In re Weiss Watch Co., 123
USPQ2d 1200, 1204 (TTAB 2017) (citations omitted). See also 5 CALLMANN ON
UNFAIR COMPETITION, TRADEMARKS & MONOPOLIES § 21:20 (4th ed. 1983) (“The
doctrine of foreign equivalents applies when an ‘ordinary American purchaser’ would
be likely to ‘stop and translate the foreign word into its English equivalent,’ and is
generally applied to words from modern languages, such as . . . Spanish.”) (footnotes
omitted); see also In re Highlights for Children, Inc., 118 USPQ2d 1268, 1271 (TTAB

4 Applicant has acknowledged this translation in its request for reconsideration (“It is true,
of course, that ‘tierra’ means ‘land’ in Spanish”). 4 TTABVUE 2. The Examining Attorney
also submitted internet printouts from the websites SpanishDict (www.spanishdict.com) and
Google Translate (www.translate.google.com) showing that the term “tierra” translates to
“land” in English (attached to Office Action issued February 22, 2017, at TSDR pp. 2-3). As
we noted supra at n.2, the cited registration (Reg. No. 3039496) contains the statement: “The
English translation of the word ‘TERRA’ [sic] in the mark is ‘LAND.’”
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2016); La Peregrina, 86 USPQ2d at 1648; In re Thomas, 79 USPQ2d 1021, 1024
(TTAB 2006).
According to data released by the U.S. Census Bureau, Spanish is the second most
common language in the United States after English and, as of 2017, there are over
41 million people speaking Spanish at home, 24 million of whom also speak English
“very well.”5 Spanish is a common, modern language spoken or understood by an
appreciable number of U.S. consumers. We therefore find that the many bilingual
consumers in the United States will stop and translate the term TIERRA in the
registered mark to “land.”
We further find that TACO TIERRA is the dominant element of Registrant’s
mark. We cannot and do not overlook the caricature of a man wearing a sombrero
that is present in Registrant’s mark, but find consumers are more likely to focus on
the stylized wording TACO TIERRA. As is often the case, the word portion of
Registrant’s composite mark is dominant because, not only does it appear first, but
consumers will use the wording, rather than the design, to refer to and call for
Registrant’s services. See In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987) (if a mark
comprises both a word and a design, then the word is normally accorded greater
weight because it would be used by purchasers to request the goods or services): see

5 “Detailed Languages Spoken at Home and Ability to Speak English for the Population 5
Years and Over for the United States: 2009-2013,” at https://www.census.gov/data/tables/
2013/demo/2009-2013-lang-tables.html. Because the U.S. Census is a standard reference, we
may, and do, take judicial notice of this information. In re Olin Corp., 124 USPQ2d 1327,
1331 n.12 (TTAB 2017).
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also CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983) (“in a
composite mark comprising a design and words, the verbal position of the mark is the
one most likely to indicate the origin of the goods to which it is affixed.”).
We have considered Applicant’s argument “[t]he sight of each mark clearly is
different” and that, “when viewed as a whole, and not split apart and dissected,
[Applicant’s mark] is distinct from the Registrant’s two-term, design mark.”6
However, as previously pointed out, there is no “sight” or “side-by-side” test when it
comes to comparing the marks in our likelihood of confusion analysis. Instead, we
focus on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea,
LLC, 110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975). Also, we agree that the marks should not be dissected
and must be considered in their entireties; however, as it has been frequently noted,
“in articulating reasons for reaching a conclusion on the issue of confusion, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re Detroit Athletic Co., --- F.3d ---,
2018 WL 4288981 *4 (Fed. Cir. Sept. 10, 2018) (quoting In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)); see also Stone Lion Capital Partners
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014).

6 7 TTABVUE 11.
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Given the aforementioned, we find the marks possess a similar connotation and
commercial impression. Although the expression TACO TIERRA is more likely to be
understood as suggestive of a menu item, tacos, or Mexican cuisine,7 being featured
in the context of Registrant’s restaurant services, consumers may also perceive a
similar suggestive connotation upon viewing Applicant’s TACOLAND in connection
with live music, bar and cocktail lounge services. In other words, Applicant’s mark is
likely to suggest that its entertainment services or its bar and cocktail lounge may
have a Mexican theme or that Mexican food, specifically tacos, may be served in
conjunction with those services. As discussed, infra, the record demonstrates that it
is common for live music venues, as well as bars and cocktail lounges, to also serve
food.
As to sound and appearance, there is the obvious similarity based on both marks
beginning with the same term TACO. We are also cognizant of the differences in the
marks, both in sound and appearance, due to the addition of the design element in
the registered mark and the marks’ secondary and foreign equivalent terms, LAND
and TIERRA.
In sum, we find the marks are overall more similar than not. Our findings that
TACO TIERRA is the more dominant element of the cited, registered mark, and it is
likely to be translated to “Taco Land,” the near equivalent of Applicant’s mark are

7 “Taco” is defined as “a Mexican dish consisting of a fried and folded or rolled tortilla filled
with chopped meat, shredded lettuce, etc.” Webster’s New World College Dictionary (4th ed.
2010). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du
Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
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significant. The marks share a similar connotation and are aurally similar because
they begin with the same word. These points of similarity outweigh the differences
between the marks.
B. Alleged “Crowded Field” and “Weak Mark”
Applicant argues that there is a “crowded field” of TACO-formative marks and
that this “demonstrate[s] that [the registered mark] is weak, as consumers already
pay attention to the types of distinctions present among the marks.”8 However,
Applicant only references the two involved marks and two third-party registrations
(Reg. Nos. 1418759 and 5058758 for the respective marks TACOLAND MEAL and
TACOLANDIA). As to the former registration, it is now cancelled (see Note 3) and
thus has little, if any, probative value as to any purported weakness in the cited mark.
“The existence of a cancelled registration--particularly one cancelled for failure to
provide a declaration of continued use--does not tend to show that the cited mark
is weak due to third-party use.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745
(TTAB 2018), citing Bond v. Taylor, 119 USPQ2d 1049, 1054 (TTAB 2016) (“The
existence of a cancelled registration and an abandoned application does not establish
that Opposer’s mark is weak.”). As to the TACOLANDIA registration,9 this is but one
registration and there is no evidence that the mark is actually used in commerce or

8 7 TTABVUE 13.
9 A copy of the underlying application (Ser. No. 86925165) was attached to the Examining
Attorney’s June 27, 2016 Office Action, and Applicant was advised that, should the mark be
registered, it may serve as an additional basis for the likelihood of confusion refusal.
However, in Office Action dated February 22, 2017, the Examining Attorney withdrew the
advisory. A copy of the registration file was never made of record, but both Applicant and the
Examining Attorney have acknowledged the resulting registration.
Serial No. 86935545
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that consumers are even aware of the mark. AMF Inc. v. Am. Leisure Prods., Inc., 474
F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) (The “existence of [third-party]
registrations is not evidence of what happens in the market place or that customers
are familiar with them.”). A single third-party registration falls short of the amount
and type of evidence needed to show that the cited mark is diluted and commercially
weak for the relevant services. Compare Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F3d 1363, 116 USPQ2d
1129, 1136 (Fed. Cir. 2015) (“extensive” evidence not only of third-party registrations
but also “of these marks being used in internet commerce” for the relevant goods);
Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1671
(Fed. Cir. 2015) (uncontradicted testimony of “a considerable number” of third party
uses of similar marks, along with third-party registrations).
In sum, there is no evidentiary support for Applicant’s argument regarding
weakness of the cited mark based on third-party use of similar marks in connection
with similar services. Accordingly, this factor is neutral and we accord the cited
registered mark a normal scope of protection.
C. Relatedness of the Services
The next step in our analysis is a comparison of the services identified in
Applicant’s application vis-à-vis the services identified in the cited registration, the
second du Pont factor. See Stone Lion Capital Partners, 110 USPQ2d 1161; Octocom
Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.2d 1261, 62
Serial No. 86935545
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USPQ2d 1001, 1004 (Fed. Cir. 2002). It is settled that it is not necessary that the
respective services be identical or even competitive in order to find that they are
related. It is sufficient if the respective services are “related in some manner and/or
if the circumstances surrounding their marketing [be] such that they could give rise
to the mistaken belief that [services] emanate from the same source.” Coach Servs.
Inc., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007)); see also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991). The issue is not whether purchasers would confuse the services, but rather
whether there is a likelihood of confusion as to the source of these services. L’Oreal
S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ
830, 832 (TTAB 1984).
Here, the Examining Attorney argues that Applicant’s Class 41 entertainment
services and its Class 43 bar and cocktail lounge services are “closely related” to the
Registrant’s restaurant services “because it is common practice for the same entity to
provide both parties’ services and market such services under the same mark.”10 In
support of this contention, he submitted printouts from third-party websites
advertising services like those described in the involved application as well as
restaurant services, all rendered in a single venue and under a single mark.11 For
example, the website for “JV Restaurant” contains a schedule of entertainment for

10 9 TTABVUE 15.
11 Attached to Office Actions issued on June 27, 2016 and February 22, 2017.
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each evening of the week as well as a weekend brunch, and touts a “Live Music Room”
with “Monday Night Blues Jam”:12

Another website, for Laporta’s Restaurant, contains links for “lunch – dinner –
brunch –wine list – live music …” and describes the type of musical entertainment
provided:13

12 June 27, 2016 Office Action, TSDR p. 24.
13 Id. at TSDR p. 25.
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A third example is from the “UVA Trattoria & Bar” website advertising “live music
& bar” as well as providing “menu” and “banquets” information:14
.

The third-party website evidence is probative because it shows that consumers
are accustomed to encountering restaurants that also provide live music
entertainment, as well as bar and cocktail lounge services, all under a single roof and
advertised under a single mark. We further note that the record also includes several
use-based third-party registrations that include both Applicant’s live music
entertainment or bar and cocktail lounge services, as well as either Registrant’s
restaurant services. These third-party registrations, based on use in commerce, also
suggest that the listed services may emanate from the same source. In re Aquamar,
Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988).

14 February 22, 1017 Office Action, TSDR p. 9.
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The established relatedness of the involved services weighs in favor of finding a
likelihood of confusion.
D. Trade Channels and Classes of Consumers
Turning to the trade channels and consumers, the relatedness of the services
evidence discussed above also demonstrates that the involved services, namely, live
music entertainment (or bar and lounge services) and restaurant services are
advertised together on the same websites, and would be encountered by the same
consumers at the same locations. For example, the same consumer may listen to live
music show or enjoy a cocktail while also enjoying a meal at the same location.
Applicant’s characterization of its own actual services (as an edgy “joint with a
colorful past”) versus registrant’s services (“a family oriented fast food Mexican
restaurant”) are limitations not reflected in the respective recitations of services.15
Even if the respective services are, in fact, offered in different and particular
marketplaces and this is supported by evidence, the argument is misplaced because,
as our primary reviewing court has pointed out:
[t]he authority is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of [services] set
forth in the application regardless of what the record may reveal as to the
particular nature of an applicant’s [services], the particular channels of
trade or the class of purchasers to which sales of the [services] are directed.

Octocom Sys., 16 USPQ2d at 1787; see also Detroit Athletic Co., at *6 (“[t]he relevant
inquiry in an ex parte proceeding focuses on the goods and services described in the

15 7 TTABVUE 15.
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application and registration, and not on real-world conditions”) (citing In re
i.am.symbolic, llc, 866 F.3d 1315, 1325 (Fed. Cir. 2017)). Without such trade channel
restrictions, we must presume the services will be offered in all normal trade
channels for such services, such as websites advertising and restaurants offering
restaurant services as well as live music and bar and cocktail lounge services. See
i.am.symbolic, 123 USPQ2d at 1750 (“In the absence of meaningful limitations in
either the application or the cited registrations, the Board properly presumed that
the goods [and services] travel through all usual channels of trade and are offered to
all normal potential purchasers.”).
Accordingly, the du Pont factors involving the channels of trade through which
the services may be found and the classes of customers weigh in favor of finding a
likelihood of confusion.
E. No Evidence of Actual Confusion
Applicant acknowledges its allegation of first use of its mark in the involved
application is February 14, 2014, but asserts that its “history began in 1965” and that
“despite decades of marketing in the United States, the parties have not once crossed
paths” and the “two marks co-existed with no actual confusion.”16 However, we first
point out that there is little to no evidence showing that there has been any real
opportunity for actual confusion to have occurred during their coexistence; relevant
information is not in the record and regardless, circumstances may have changed

16 Id. at 18.
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since the time when the marks once coexisted. Statements by Applicant’s counsel,
without evidence, cannot be used to demonstrate the relevant circumstances. See
Enzo Biochem Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir.
2005) (“Attorney argument is no substitute for evidence.”) In any event, in an ex parte
proceeding, Applicant’s assertion of the absence of actual confusion is of little
probative value in our determination on the issue of likelihood of confusion because
the Board cannot readily determine whether there has been a significant opportunity
for actual confusion to have occurred, such that the absence of confusion is
meaningful. See In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re
Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984); In re Jeep Corp., 222 USPQ 333
(TTAB 1984). As pointed out by the Examining Attorney, it is not necessary to show
actual confusion in order to establish likelihood of confusion. See Weiss Assocs. Inc. v.
HRL Assocs. Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990).
Accordingly, this du Pont factor is neutral.
F. Conclusion
We have carefully considered all arguments and evidence, including any not
specifically discussed. Here, we find confusion is likely in light of our findings that
Applicant’s and Registrant’s marks are overall very similar, based mainly on the
dominant element of the registered mark being essentially the Spanish equivalent of
Applicant’s mark, and the marks will be used in connection with related services that
travel in the same channels of trade to the same classes of customers.
Decision: The refusal to register Applicant’s mark is affirmed in each class.